- PTAB · Jul 24, 2025 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–3, 10–12, 22–25, 28, 30, 32, and 33 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is obvious.
RulingsInstitution decision- Director reviewOther
“Memorandum (“Memorandum”) issued on March 26, 2025, Patent Owner filed its Discretionary Denial Brief on March 28, 2025. Paper 7. Petitioner filed its Opposition Brief on May 20, 2025. Paper 9. On June 13, 2025, Acting Director Stewart issued a decision determining that discretionary denial of institution is not appropriate in this case and referring the Petition to us for merits and other non-discretionary statutory considerations. Paper 10.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not agree with Patent Owner’s proposed claim construction because, as pointed out by Petitioner, claim 1 does not recite limitations directed to the resolution of the source data of a frame that is to be combined “to provide an image having a relatively high resolution.” We also do not agree with Patent Owner’s arguments that claims should not be read to encompass prior art distinguished in the specification based on Patent Owner’s citations to the Background passages of the ’180 Patent. The cited passages disclose foveal image sensors for acquiring both a wide and narrow field of view and having smaller pixel sizes arranged in the central foveal region and larger pixel sizes arranged in peripheral rings about the central region, resulting in sensors that have a high resolution only in the narrow field of view. Consistent with Petitioner’s observation (see Prelim. Reply 2–3), this cited passage at best distinguishes prior art foveal sensors with smaller pixel sizes arranged in the central foveal region and larger pixel sizes arranged in peripheral rings about the central region. See Ex. 1001, 2:10–24. Finally, we do not agree with Patent Owner’s arguments regarding the prosecution history. Patent Owner does not direct us to persuasive absent any statements by the Applicant regarding that applied prior art, amounts to prosecution history disclaimer. Aside from declining to adopt Patent Owner’s proposed construction, for the purpose of institution we need not explicitly construe “combine data of a frame from at least one of the plurality of channels to provide an image having relatively high resolution,” as recited in claim 1. See Realtime, 912 F.3d at 1375. 3. Other claim terms and phrases Petitioner also proposes a construction for “data of a frame,” recited in claim 1. See Pet. 8. Patent Owner does not specifically address this claim construction. See Prelim. Resp. 23–30. For the purpose of institution, we need not explicitly construe “data of a frame” or any other claim term or phrase. See Realtime, 912 F.3d at 1375.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner proposes a similar level of skill in the art as Petitioner, namely, that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in digital imaging.” Prelim. Resp. 31 (citing Ex. 2013 ¶ 80). person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we institute review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent, and we adopt it here.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,952,153 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00135 · APJ John A Hudalla · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion under Fintiv because the parallel litigation was advanced and trial would precede a final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Under the latest applicable guidance, Petitioner’s Sotera stipulation “is highly relevant, but [is] not . . . dispositive by itself.” CAPJ Memo at 2– 3. Accordingly, we consider Petitioner’s stipulation “as part of [our] holistic analysis under Fintiv.” Id. at 2. In theory, Petitioner’s stipulation could “mitigate[] any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” regarding unpatentability/ invalidity. Sotera, Paper 12 at 19. We note that Petitioner’s initial invalidity contentions included the two asserted references here, Bennett and Nashida. Although Petitioner served those contentions before the filing of the instant Petition—in which it proffered its stipulation—we cannot discern from the instant record whether Petitioner’s present invalidity positions in the underlying litigation incorporate any aspects of its grounds here based on Bennett and Nashida. Still, we view Petitioner’s stipulation as significantly mitigating potential conflict given the likelihood that the court would hold Petitioner (and its privies) to Petitioner’s representations made here.5” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”). For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“controller” that “receive[s] an identifier for identifying a second video content from [an] external mobile terminal” and “acquire[s] the second video content via the internet using said identifier.” Ex. 1001, 20:29–31, 20:46–47, 20:52–55 (alterations and emphasis added). In the Bennett obviousness ground, Petitioner cites Bennett’s control signal that directs display of a video stream on a television screen for teaching the recited “identifier.” Pet. 32 (citing Ex. 1004 ¶ 32). Petitioner further cites Bennett’s teaching of an Internet server as a media source for teaching the “acquire[s]” limitation. Id. at 34 (citing Ex. 1004 ¶ 55). Petitioner alternatively cites its declarant’s testimony and contends that it would have been obvious “to use an identifier such as URL in Bennett’s system to retrieve video content from the Internet.” Id. at 35 (citing Ex. 1003 ¶ 87). Yet Patent Owner’s arguments (see Prelim. Resp. 59–64) call into question whether Bennett teaches or suggests the use of either Bennett’s control signal or a URL to “acquire the second video content via the internet.” In addition, we preliminarily agree with Patent Owner that Petitioner’s arguments regarding the URL “focus on justifying an example of what an identifier could be, and fail[] to address a scenario that would justify the receipt of a URL from a phone/remote” in Bennett’s system. Id. at 63. Petitioner’s further contentions for these limitations in the Bennett– Nashida obviousness ground (see Pet. 73–75) do not necessarily cure the deficiencies mentioned by Patent Owner. Petitioner contends that “Nashida discloses the use of identifiers, such as URLs, for retrieving internet content” and cites Nashida’s teaching of “‘controller 1010 transmit[ting] a command of requesting a transmission of a URL’ for retrieving and displaying web content on a display apparatus.” Id. at 73 (quoting Ex. 1005 ¶ 120). Yet, according to Patent Owner, Nashida appears to show the URL moving in the opposite direction of Petitioner’s intended mapping: “It is therefore the image display apparatus (the alleged ‘display apparatus’) that sends the URL to the remote controller . . . , and not the other way around, as claimed by Petitioner.” Prelim. Resp. 67 (citing Ex. 1005 ¶ 1216). At the very least, these issues preclude a finding of “particularly” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,219,020 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00134 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR challenging claims 1–11, 13, and 15–20, finding that the advanced Texas litigation and trial timing outweighed the Petition’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“September 22, 2025, which is less than four months after the statutory deadline for this Decision and “almost eight months before the projected statutory deadline for a final written decision.” Prelim. Resp. 25 (citing Ex. 2004). Accordingly, the trial is currently set to occur several months before any Final Written Decision in this case will issue. Although trial delays are a possibility, there is no evidence before us that would indicate the likelihood of a trial postponement. Thus, this factor strongly favors discretionary denial.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the Petition does not present a particularly strong challenge, because it inadequately addresses at least one claim limitation. In particular, limitation [1F] requires “USB interface circuitry [that] transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,650,780 - Bote, LLC v. Steamboat Paddlesports, LLCAdverse judgmentPTAB · Mar 25, 2025 · IPR2024-00892 · APJ Cynthia L Murphy · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after finding abandonment, resulting in cancellation of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“As noted in the Scheduling Order, “[i]f Patent Owner elects not to file a response to the Petition, Patent Owner must arrange a conference call with the parties and the Board.” [Paper 15, 9.] Thus, Patent Owner has three options: 1) file a response by February 18, 2025, 2) arrange a conference call in accordance with the Scheduling Order, or 3) stipulate a revised due date with Petitioner and file a response by the stipulated due date. Patent Owner must appoint counsel to proceed with any of these options, which Patent Owner should do without delay. Patent Owner’s failure to proceed with one of these options could be viewed as an abandonment of this proceeding. And such abandonment would be construed as Patent Owner’s request for adverse judgment against itself (see 37 C.F.R. § 42.73(b)(4)), resulting in cancellation of all of the claims challenged in the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“Accordingly, it is ORDERED that adverse judgment shall be entered against Patent Owner as to claims 1–20 of the ’466 patent under 37 C.F.R. § 42.73(b).4 FURTHER ORDERED that this paper constitutes a final written decision pursuant to 35 U.S.C. § 318(a) holding that claims 1–20 of the ’466 patent are unpatentable based on the adverse judgment; and “not made any attempt whatsoever to contact Petitioner regarding this IPR.” Ex. 1027 ¶ 7. 3 Patent Owner is reminded of the applicable estoppel provisions in 37 C.F.R. § 42.73(d)(3). 4 Petitioner filed a motion asking for a finding that Patent Owner had abandoned the proceedings and constructively requested adverse judgment against itself. See Paper 19; Ex. 3002. Petitioner’s motion is dismissed as moot in view of our entry of adverse judgment for the reasons expressed herein. The same applies to Petitioner’s request to submit supplemental evidence. See Ex. 3003.” slip op. at 3
NonePatents in suitUS 9,862,466 - Penumbra, Inc. v. Rapidpulse, Inc.InstitutedPTAB · Feb 21, 2025 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Institution
Instituted IPR of claims 1–20 on all petitioned grounds after finding a reasonable likelihood that the challenged claims would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–20 of the ’402 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Brown, contends that a person of ordinary skill in the art (“POSA” or “POSITA”) as of the relevant date would be either: (1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its Preliminary Response, it accepts Petitioner’s proposed definition of POSA, but “reserves the right to propose its own description of a POSA if the Board institutes review.” Prelim. Resp. 8 n.3. For purposes of this Decision, we adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner provides a proposed construction for the term “[limited/limiting] to a positive amount of exit flow” recited in claims 3, 4, 13, and 15, as “the maximum permitted amount of positive exit flow in the distal direction, including no exit flow.” Pet. 15–16. Patent Owner asserts that “Petitioner’s proposed construction of ‘a positive amount of exit flow’ as ‘including no exit flow’ is plainly wrong.” Prelim. Resp. 9 (citing Pet. 15–16). Patent Owner also asserts that to the extent Petitioner “view[s] the claim term ‘flow in and out’ as encompassing only flow in or no flow at all, that would be plainly wrong too.” Id. Having evaluated the arguments and evidence before us on this record, we determine that construction of “[limited/limiting] to a positive amount of exit flow” is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). Turning to a different claim term, we note that neither party provided an explicit construction for the limitation in claim 1 of “control[ling] fluid address the proper claim construction for this term and to specifically discuss what is encompassed by “flow . . . out from the distal end.” We note that in the related cases (IPR2021-01466 and IPR2022-00608), we construed the term, “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters of fluid.” Ex. 2007, 15; Ex. 2011, 13–14. Upon review of the parties’ arguments and the evidence of record, we determine that no terms require express construction for purposes of this Decision. See Nidec Motor Corp, 868 F.3d at 1017.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c) Analysis On the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over the combined disclosures of Yang and Mullins. First, Patent Owner asserts that Yang does not disclose the limitation of “a controller . . . to control fluid flow in and out from the distal end.” Prelim. Resp. 21– 32. On the current record, we agree with Patent Owner that introducing a positive pressure pulse such as through the water hammer effect does not necessarily mean that there will be an overall distal end. See Ex. 2001 ¶¶ 53–54; Ex. 2005 ¶ 60; Ex. 2007, 51 n.12. This is especially true if an overall vacuum state is maintained in the catheter. See Ex. 2001 ¶ 56; Ex. 2007, 43; Ex. 2010, 125:11–18. Further, on the current record, we credit the testimony of Patent Owner’s declarant, Mr. Culbert, that to have flow out of the catheter’s distal end when it is in a patient, the pressure in the catheter needs to exceed mean arterial pressure. See Ex. 2001 ¶ 59; Ex. 2010, 126:15–21. Therefore, on the current record, we agree with Patent Owner that Yang may not explicitly disclose flow out from the distal end of the catheter. Whether Yang alone renders this limitation obvious may be explored further on a full trial record; however, because this limitation appears to be taught by Mullins and Petitioner has shown on this record that a POSA would have been motivated to combine the disclosures of Yang and Mullins, we are sufficiently persuaded that Petitioner has met its burden to show a reasonable likelihood that this limitation is rendered obvious by the combined disclosures of Yang and Mullins.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,406,402 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-01039 · APJ Jason W Melvin · IPR · Final written decision
Claims 8, 10–18, and 24–47 are unpatentable: Alden anticipates claims 24–27, 29–35, 37–43, and 45–47; the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/70538 A2, published Sept. 27, 2001 (Ex. 1008). similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The problem with Patent Owner’s claim-construction position is that neither the dictionary definition nor the ’551 patent’s specification establish any degree of proof, verification, or confirmation that an object has been correctly identified. The specification discloses that “techniques known in the art” may be used “to classify, identify or locate the contents” visible to a camera sensor. Ex. 1001, 44:67–45:9. That does not establish any certainty obtained by the preexisting techniques. The specification states that the system can “illuminate distant overhead and roadside signs” and can use “[i]mage recognition via a camera” so that the illumination beam may “follow the retroreflective sign as the vehicle moves.” Id. at 51:59–67. That disclosure does not speak to any degree of confirmation or certainty. The specification’s other disclosures are no different. Id. at 52:19–27 (disclosing automated control over lighting and referencing “automatic dimming of high beam due to detection of oncoming vehicles”), 52:66–53:4 (“Using color and pattern recognition techniques it is possible to determine what is a sign.”), 63:9–12 (“Using real time image processing methodologies with image and scene recognition technology known in the art, room or outdoor area elements, objects and people are identified.”), 64:46–49 (“Using machine vision technology known in the art such as neural networks training and other pattern recognition techniques the vision system has sensor, algorithmic and computation means for identifying devices or objects.”), 69:54–57 (“In a preferred embodiment of the invention the logical controller 454 receiving image input from the camera 453 and running pattern recognition software will identify what is the visual task a person is trying to perform.”), 75:48–62 (“Using programmed scene recognition algorithms, the luminaire’s computer vision system comprised of the camera sensor 496 and logical controller 494 identifies the food on the plate, looks-up in storage the recommended CCT and powers each of the different colored LED chips aimed thereon at the correct power level in order to provide the optimal color illumination.”), 76:33–39 (“[A] camera vision system has algorithmic means to identify and track the position of people and objects and the logical controller has motion control means for re-aiming the light sources towards targeted elements and changing the power level to the LED chips.”). None of those disclosures addresses a requirement for confirming or verifying an identification that the system makes; nor does any address a particular accuracy requirement in identifying an object. Based on the specification using “identify” without any requirement that identifying an object requires confirmation or verification of the object’s true identify, we do not adopt Patent Owner’s proposed construction. Although the construction itself similarly does not expressly require the confirmation or verification that Patent Owner seeks to impose, we understand that to be Patent Owner’s intent, and accordingly do not adopt the proposed construction. The parties dispute no other aspect of “identify,” and we therefore need not expressly construe the term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because Alden describes its segmented headlights as implementing a process using two-dimensional signals for two-dimensional dimming functionality, we find that Figure 5 depicts a section of an embodiment that contains more than a single row of lighting elements. Stated otherwise, Alden’s disclosures are consistent with each other and are directed to a two-dimensional approach to sensing, control, and illumination. Further, we agree with Petitioner that Patent Owner has not addressed the legal standard for lack of enablement. Pet. Reply 2. In particular, to overcome the presumption that prior-art disclosures are enabled, Patent Owner must show ordinarily skilled artisans would require undue experimentation to practice the disclosed invention. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F. 3d 1313, 1354–55 (Fed. Cir. 2003); In re Antor Media Corp., 689 F. 3d 1282, 1287– 88 (Fed. Cir. 2012). We do not agree with Patent Owner that Alden lacks a presumption of enablement (see PO Surreply 7–8), because we determine that Petitioner’s contentions rely on Alden’s disclosures regarding its invention as a whole. Other than arguing that Figure 5 discloses a single-row embodiment that is unusable with Alden’s other disclosures, Patent Owner has made no attempt to show Alden lacks enablement. Patent Owner has not addressed what experimentation skilled artisans would require to practice an invention using Alden’s Figure 5 segmented headlight with the remainder of Alden’s system as disclosed in Figures 2, 3, and 4, and Alden’s corresponding textual description. We therefore determine that Patent Owner has not shown Alden to lack enablement for its disclosed invention.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that skilled artisans would have had reason to incorporate Kobayashi’s teachings that its controller receives “road map information” from a “road profile calculating means” and uses it to adjust the headlamp’s illumination. Pet. 63–64. Petitioner reasons that it would be obvious to “apply these teachings to Alden to use map data to identify road curvature when adapting the LEDs of Alden to ‘direct light into the corner.’” Id. at 64 (citing Ex. 1003 ¶ 122). And Petitioner asserts that skilled artisans had reason to do so because it would “maximize successful detection in different environments” such as where the road lack reflectors. Id. at 65 (citing Ex. 1003 ¶ 123). Other than as discussed above regarding Alden’s disclosures, Patent Owner does not contest Petitioner’s showing for claims 28, 36, and 44. We have considered the full record, including evidence and arguments presented by Petitioner and Patent Owner on whether the combination of Alden and Kobayashi discloses each limitation of claims 28, 36, and 44, and whether skilled artisans would have had reason to combine the references’ teachings as asserted. Based on the full record, we conclude that Petitioner has proven that claims 28, 36, and 44 would have been obvious over Alden and Kobayashi. Pet. 62–65.” slip op. at 34
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551 - PTAB · Nov 8, 2024 · IPR2024-00777 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 16–27 based on the grounds set forth in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) due to the advanced state of the parallel district-court action, which Patent Owner notes has scheduled trial date of May 19, 2025. See Prelim. Resp. 17. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),13 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a) based on parallel litigation.” slip op. at 7
- Parallel petitionsDenied
“institution under § 314(a) because this is the second proceeding challenging the ’815 patent and Petitioner has not justified two such challenges. Paper 8 (Patent Owner’s Response to Petitioners’ Notice Ranking Multiple Petitions). Petitioner filed a Notice Ranking Petitions, noting that this proceeding involves a second petition challenging the ’815 patent, after a petition in IPR2024-00735 challenged claims 1–15. Paper 4 (“Pet. Ranking”). Petitioner’s Ranking asserts that the two petitions challenge different claims, and that the 27 collectively challenged claims are voluminous, occupying approximately six columns of the ’815 patent. Pet. Ranking 2. We note also that the independent claims challenged in this proceeding include limitations not present in the claims challenged in the -735 IPR, such as multiple user profiles and encrypted video information. See Ex. 1001, claims 16, 21. We conclude that the ’815 patent’s claims justify two petitions based on a combination of the number of 13 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. limitations and the number of claims. We therefore decline to discretionarily deny institution under § 314(a) based on multiple parallel petitions.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 100. The Horn–Baumgartner–Candelore combinations were not presented during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner–Candelore grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have held a bachelor’s degree in Computer Science, Electrical Engineering, and Computer Engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1002 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Oct 1, 2024 · IPR2024-00692 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–9 and 11–21 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Kane and Beckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Beckley. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Beckley, as Petitioner proposes.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As explained by the Federal Circuit, [f]or objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“previously were presented to the Office.”8 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.